Sunao SATO Japan Patent Office January 21, 2016

Transcription

1 Session 6 Trademark Information Tools; How to Search Using WIPO ROMARIN, Goods and Services Manager(MGS), Global Brand Database (GBD), J-Plat-Pat and TM5/ID list, etc. Sunao SATO Japan Patent Office January 21, 2016

2 Contents 1. ROMARIN 2. GBD 3. TMview 4. MGS 5. ID List 6. J ー PlatPat 7. Important points about various search tools 8. How to use each type of information 1

3 1. ROMARIN (1) Outline What is ROMARIN? ROMARIN (Read-Only-Memory of Madrid Active Registry INformation) is a database which contains information regarding all international marks recorded under the Madrid system ROMARIN is updated daily, with updates taking place overnight Geneva time. ROMARIN is available in the three working languages of the Madrid System: French, English and Spanish. Search Search Results IR Status 2

4 1. ROMARIN (2) Major Function and Important Notes Major Functions ROMARIN provides access to more than 600,000 international trademarks covering 96 jurisdictions, equivalent to some 4.2 million national registrations. ROMARIN includes all the substantive history of each registration, including refusals, grants of protection and cancellations. Notes: Available Information ROMARIN provides information regarding all international marks that are currently in force in the International Register or have expired within the past six months is available. ROMARIN includes all the substantive history of each registration, including refusals, grants of protection and cancellations. ROMARIN does NOT contain Information on trademarks registered by direct applications in each country. Notes: Status of protection of a mark In order to confirm the scope of protection in designated countries, you should look over the current status of each designated country especially when information on limitation of list of the Goods and Services (G&S) is recorded. 3

5 1. ROMARIN (3) Basic Operation [i] How to use the Simple search Simply enter appropriate text into one or more of the search boxes. Make sure that you indicate the appropriate search operator ( and, or, etc.) and click on the search button. Designate the scope of IRs subject to the search Choose the search item Enter a keyword Number of the search results to be listed at a time Search Button 4

6 1. ROMARIN (4) Basic Operation [ii] Search results Items to be displayed on the screen can be selected from the pulldown menu. In order to see the details of IRs of interests, click on the blue colored and underlined Mark Number or Mark Name. Click Mark Number or Mark Name 5

7 1. ROMARIN (4) Basic Operation [iii] Check the status of IR Basic information on IR, such as the holder name, mark, and G&S is available in the Current Status field of Full details. Designated countries Holder name, mark, and designated G&S The procedure is recorded chronologically (with the abbreviated names of relevant countries) 6

8 2. GBD (1) Outline What is GBD? GBD (Global Brand Database) is WIPO's Search Tool. GBD users can conduct a trademark search by text or image in brand data from multiple national and international sources, including trademarks, appellations of origin and official emblems. As of December 2015, GBD stores about 24 million data items. The frequency of information update varies depending on the type of information. Daily update of the information on the international trademark registrations and on the trademarks registered in the U.S., Switzerland, Mexico, and the Philippines Weekly update of the information on the trademark registered in Israel, Australia, and Japan. Available in English, French, and Spanish A mutual link function available between GBD and TMview (OHIM's online trademark search system) Available information Trademark registered under Madrid System Appellations of Origin registered under Lisbon system Emblems protected under the Paris Convention 6ter Trademarks registered in 25 countries (as of December 2015). Algeria, Australia, Brunei, Canada, Cambodia, Denmark, Egypt, Estonia, Indonesia, Israel, Mexico, Morocco, New Zealand, Oman, the Philippines, Singapore, Switzerland, UAE, the U.S., Tonga, Japan, Laos, Germany, Moldova, Republic of Korea 7

9 2. GBD (2) Major Functions Major functions User can conduct a search by using keywords such as trademark name, holder name, registration date, country, Nice Class, Image Class (Vienna Code, US code), etc. Advanced search such as phonetic search and fuzzy search is available. Analysis of geographical distribution (see below) Image search function (See the next slide) 8

10 2. GBD (3) Image Search Function What is the Image Search Function? The Image Search Function allows users to conduct a search for similar figure trademarks by inputting an image file of the target figure With Image Search Function, GBD users can easily search for any figures based on image data without using the Vienna Code Search For Find (in top results without Vienna Class) 9

11 2. GBD (4) Basic Operation [i] How to use the GBD In order to conduct a search for targeted trademarks, choose a search item and enter appropriate text into one or more of the search boxes, and click on the search button. User can set a search condition by choosing a filtering item and clicking the filter Button. Choose a search item Choose a filtering item Enter a keyword "Filter" button Search 10

12 2. GBD (4) Basic Operation [ii] List of search results Soon after conducting a search, search results are displayed on the screen. By clicking the information section of a search result, users can check further details By pressing the "TMview" button, users can conduct a similar search by TMview (mutual link function) "TMview" button Click the information section of a search result 11

13 2. GBD (4) Basic Operation [iii] Details of each search result GBD User can check the name of the applicant, the designated G&S, and other detailed information Upon clicking the blue colored link, users can move to the JPO's trademark application and registration search site (J-PlatPat). 12

14 2. GBD (4) Basic Operation [iv] Method of image search By uploading image data and choosing the field (shape, color, etc.), users can conduct a search for images that are possibly similar to the uploaded image. Choose the field of search Upload image data 13

15 3. TMview (1) Outline What is TMview? TMView is the database of OHIM, which enables users to conduct a trademark search from the data items gathered from 44 participating Offices. As of December 2015, TMview stores about 32 million data items. Updated daily Available in at least one official language of the TMview participating countries. A mutual link function between TMview and GBD (Global Brand Database), i.e., WIPO's online trademark search system. TMview participating Offices ARIPO, Australia, Bosnia and Herzegovina, Bulgaria, Benelux countries, Canada, Switzerland, Cyprus, Czech Republic, Germany, Denmark, Estonia, Spain, Finland, France, the U.K., Greece, Croatia, Hungary, Ireland, Iceland, Italy, Japan, South Korea, Lithuania, Latvia, Morocco, FYROM, Malta, Mexico, Norway, the Philippines, Poland, Portugal, Romania, Serbia, Russia, Sweden, Slovenia, Slovak Republic, Tunisia, Turkey, the U.S., OHIM JPO joined TMview in November 23, ASEAN TMview ASEAN TMview is a TMview specialized in trademark information in the ASEAN region. As of December 2015, ASEAN TMview stores about 3.3 million data items. The ten participating Offices are as follows. Brunei Darussalam, Indonesia, Cambodia, Laos, Myanmar, Malaysia, the Philippines, Singapore, Thailand, Vietnam *So far, no data is available concerning Myanmar 14

16 3. TMview (2) Basic Operation [i] Search By entering a keyword in a box, users can conduct a search by the mark name. "Advanced search function enables users to conduct a search by application /registration number, trademark type such as sound and movement, trademark status, or other detailed information. Enter a keyword By clicking "Advanced search," users can conduct a more refined search 15

17 3. TMview (2) Basic Operation [i] Advanced search "Advanced search" screen By using the "advanced search" function, users can conduct a more refined, efficient search 16

18 3. TMview (2) Basic Operation [ii] List of search results Soon after conducting a search, search results are displayed on the screen. The search results can be sorted by the name of the Office, applicant name, status, etc. by using the filter function. By clicking the blue colored Trade mark name or Application/Registration number, users can check the detailed information. By clicking "WIPO Global Brand DB" button, users can conduct a similar search of the Global Brand Database (Mutual link function). "WIPO Global Brand DB" button "Filters" button Click the blue trademark name or application/registrat ion number. 17

19 3. TMview (2) Basic Operation [ii] Filters "Filters" screen This "Filters" screen shows the results of a trademark search with the keyword "SONY" filtered by "status." 18

20 3. TMview (2) Basic Operation [iii] Screen of each trademark Users can check detailed information on the applicant, the designated G&S priority, etc. Any opposition and request for cancellation will be indicated on this webpage. 19

21 4. MGS (1) Outline What is MGS? MGS (Madrid Goods and Services Manager) is a WIPO free database to help preparing a list of designated goods or services. MGS shows the indications and classifications acceptable to the International Bureau and shows the acceptance or non-acceptance by each Contracting Party. As of December 2015, MGS covers about 40,000 indications in G&S. The use of MGS by applicants would increase the transparency of the indications of the G&S used in international applications and reduce the number of irregularity notices and notices of refusal from the designated countries. APPLICATION FOR THE INTERNATIONAL REGISTRATION.. ➓ GOODS AND SERVICES Class XX Goods and services XXX;YYY;ZZZ MM2(E) 20

22 4. MGS (2) Major Functions and Important Notes Major functions MGS allows users to (1) check the standard indications of goods or services acceptable to WIPO, (2) browse and search for information in 17 languages including Japanese, English, French, and Spanish, and (3) prepare a list of the designated G&S. Users can also translate a document in Japanese to another language and check the acceptance by each of the Contracting Parties. The specific functions are listed below. Browse and search for the names of G&S (English, Japanese, etc.) Prepare and edit the list of the names of G&S Check the acceptance by WIPO Check the acceptance by some of the Contracting Parties (a total of 26 countries, i.e., Austria, Benelux countries, Belarus, Switzerland, China, Colombia, Germany, Denmark, Estonia, EU, Finland, United Kingdom, Israel, Italy, Japan, South Korea, Mexico, Norway, Portugal, Serbia, Russia, Sweden, Singapore, Turkey, Ukraine, and the U.S.) Mutual translation of indications Important Notes MGS does not necessarily cover all of the indications already adopted by the International Bureau, but stores the names of G&S recommended by the International Bureau. The International Bureau carefully determines which indications to adopt in consideration of various factors such as the frequency of the use of the indication in international applications. Therefore, any indication not covered by MGS is not necessarily inappropriate. If such indication is used in an application, the acceptance would be determined by the International Bureau. An indication covered by MGS could be rejected by any designated country that finds it to be not specific enough. The acceptance by each designated country should be checked based on the database provided by MGS and the designated Office. 21

23 4. MGS (3) Basic Operation [i] Search Choose a language from 17 official languages Enter a keyword in a box and search for the G&S containing the keyword From the list of search results, choose an indication of goods or services to check its acceptance by the designated countries (some of them). Choose a language Enter a keyword List of search results 22

24 4. MGS (3) Basic Operation [ii] Checking the acceptance by the designated countries Select the countries to check whether they accept certain names of G&S (multiple choices permitted) The following colors are used to show acceptance or non-acceptance. Green countries Acceptance Red countries Non-acceptance No color Not known (not determined) Click "Check acceptance by designated countries (dcp)" to select the target countries. Check the acceptance 23

25 5. ID List (1) Outline What is the ID List Project? One of the projects of TM5 (collaboration among the five trademark offices, namely, the JPO, KIPO, OHIM, SAIC, and USPTO) The purpose of this project is to provide users a list of names of G&S (IDs) designated in trademark applications that are acceptable by all of the five trademark offices (TM5 partners ) Use a special search tool (TM5 ID List) to conduct a search for the names of G&S. As of December 2015, the ID List stores about 14,000 names of G&S. A search of the ID List is possible only in English. However, some of the IDs can be translated into the languages used by other TM5 partners (Japanese, Chinese, Korean, and 23 official languages of EU) Participating Offices TM5 partners Japan, South Korea, Europe, China, the U.S. Japan Offices other than the TM5 partners Canada, Mexico, the Philippines, Russia, Singapore, Colombia, Chile China TM5 ID List U.S. * The participating Offices other than the TM5 partners can declare their acceptance or non-acceptance of the names of G&S included in the ID List (those accepted by all of the TM5 partners). The non-tm5 Offices do not have the right to vote (right to refuse), but are permitted to propose up to ten names of G&S per month as long as they declare their acceptance of at least 90% of the indications already stored in the ID List. South Korea Europe 24

26 5. ID List (2) Effects and Future Effects of the ID List By checking the ID List Database before filing trademark applications with any offices participating in the IP List Project, the applicants can learn about appropriate classes and indications of the designated G&S beforehand. Thus, the examination result would become more predictable to the applicant. If applicants check the acceptance of the indications of the designated G&S stated in the applications in advance, it would reduce the Offices' burden of examination and improve the consistency of examination results and their legal reliability. Future of the ID List Increase in the number of participating Offices Japan will make efforts to promote the participation by counties in the Asia region: especially ASEAN countries. Currently invited countries: New Zealand, Australia, Vietnam, Peru, Brazil, Brunei Darussalam, Cambodia, Indonesia, Laos, Malaysia, and Thailand ID List search by languages other than English Improvement of the translation function * The countries shown in red in the map are ID List Project participants. 25

27 5. ID List (3) Basic Operation [i] Search Search in English only Enter a keyword in the box "Search term" and search for the targeted goods or services. A search without any keyword would allow users to browse all of the names of G&S on the ID List. Click "Advanced criteria" and change the settings such as "partial match" and "exact match." Click "Search" Enter a keyword "Advanced criteria" button 26

28 5. ID List (3) Basic Operation [ii] List of search results After this partial match search, names of G&S containing the keyword "milk" have been listed on the screen. By clicking any indication of goods or services, it is possible check the translations in the languages used by the TM5 partners. Number of hits by the search List of search results 27

29 5. ID List (3) Basic Operation [ii] Translation List of translations 28

30 6. J-PlatPat (1) Outline What is J-PlatPat? J-PlatPat (Japan Platform for Patent Information) is JPO's free patent information service Users can check the JPO gazettes of patents, utility models, designs, and trademarks, and the examination status of each application. As of December 2015, J-PlatPat stores about 100 million data items. Search in English is partially available. Outline of the service Patents, utility models, designs, trademarks Enter the application number or classification, keyword, etc. and search for the relevant gazettes, etc. concerning patents, utility models, designs, or trademarks Trials Users can check the results and details of the action instituted by a party dissatisfied with the JPO examiner's decision Status of protection of a mark Enter the Application Number, the Number of the Publication of Unexamined Patent Application, etc., and check the progress in the examination of each application and the status of each right, etc. 29

31 6. J-PlatPat (2) Major services in the field of trademarks Major services in the field of trademarks Trademark applications and registrations Enter the trademark name, document number, date, the name of the applicant, etc. and search for the bibliographic information and status information concerning a trademark that is still pending or in force. Trademark search for figures, etc. Search for a trademark, etc., containing a figure based on the Vienna Classification, which is an international classification of the figurative elements of marks Classification table of figures, etc. Check the classification of figures, etc. based on the unique Japanese classification system, i.e., the general classification, the mid-level classification, and the specific classification. *Japan has a unique classification system that reflects Japanese society and culture by emulating the scheme of the Vienna Classification, which is an international classification of the figurative elements of marks Search based on the name of G&S Enter the name of G&S and search for the designated G&S, etc. stated in trademark applications. Search of well-known and famous trademarks in Japan The enter the trademark name, the right holder's name, etc. and search for the registered trademarks, etc. found to be well known or famous in JPO decisions or court judgments 30

32 6. J-PlatPat (3) Basic Operation [i] Search of trademark applications and registrations Search Use the pulldown menu to select any of the 18 search items including application number, registration number, applicant's name, and right holder's name. Search by the type of trademark is also possible. Pull down Type check box 31

33 6. J-PlatPat (3) Basic Operation [ii] Search of trademark applications and registrations List of search results The search results will be listed on the screen. Click the blue application/registration number and check the information on each trademark Click the blue part. 32

34 6. J-PlatPat (3) Basic Operation [iii] Search of trademark applications and registrations Information on each trademark Check detailed information such as the expiration date and the designated G&S. Click "Detail" to check the updated information, the address of the applicant and the right holder, etc. Click "Gazette" and move to the webpage of a relevant gazette available in Japanese. * No gazettes are available in English. 青い部分をクリック Link to the relevant gazette. Detail 33

35 6. J-PlatPat (3) Basic Operation [iv] Search by the name of G&S Search Enter a version of international classification and a keyword in the box "Goods and Services" and search for the names of the designated goods and services, etc. stated in trademark applications. Refine the search in accordance with the type of the data subject to the search such as "the indications adapted by the JPO examiners" and "the indications adopted in the Nice Classification." Choose a version of the classification Select the types of data Enter a keyword 34

36 6. J-PlatPat (3) Basic Operation [v] Search by the name of G&S List of search results The goods and services containing the keyword are displayed on the screen. On the right column, Japan's "Similar Group Code" will be indicated. * "Similar Group Code" is a classification system to identify any goods that have commonalities in terms of the production department, sales department, raw materials, quality, etc. and any services that have commonalities in terms of the means, purpose, and place of service provision. According to Japanese trademark examination practices, the goods or services that have the same Similar Group Code are presumed to be similar goods or services in principle. Similar Group Code 35

37 7. Comparison of various search tools Names of tools ROMARIN GBD TMview MGS ID List J-PlatPat Provider WIPO WIPO OHIM WIPO TM5 JPO Scope of search International registrations made by the International Bureau under the Madrid system Trademark applications and registrations in the GBD participating countries (text and images) Trademark applications and registrations in the TMview participating countries (text) Indications of goods and services accessible by the International Bureau and some Contracting Parties Indications of goods and services accessible by the TM5 partners (1) Trademark applications and registrations (text) (2) Indications of goods and services acceptable in Japan Geographica l areas of search 96 countries participating in the Madrid system 25 countries 44 countries International Bureau & 26 countries TM5 partners Japan Number of data items About 600,000 About 24 million About 32 million About 40,000 About 16,000 About 100 million Languages English, Spanish, and French English, Spanish, and French 33 languages including English, Spanish, and French 17 languages including English, Spanish, and French (1) English used in searches (2) Translations available in Japanese, Chinese, Korean, and all of the 23 official languages in EU Japanese and English 36

38 8. How to use various information Any person who plans to file a trademark application should check other persons' trademark applications and registrations in advance by using free databases offered by various countries and organizations. Even if no trademark applications and registrations have been made by any third parties in the applicant's country, there is a risk that an application for or registration of an identical or similar trademark has been made in other countries and that such trademark could hinder the applicant's global activities. Any person who plans to file an application in another country should use ROMARIN, which provides information on notifications of provisional refusal from designated countries. From the time a company files a trademark application in its own country, if the company uses indications of goods and services available in MGS, ID List, etc., it can contribute to reducing the risk of receiving an irregularity notice from the International Bureau or a notice of refusal concerning G&S from any country, when the company conducts business globally. 37

39 THANK YOU! 38